Case 3:12-cv-02304-HU

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IN THE UNITED STATES DISTRICT COURT FOR THE WESTERN DISTRICT OF KENTUCKY LOUISVILLE DIVISION

SAZERAC COMPANY, INC., a Louisiana corporation, Plaintiff, v. HOOD RIVER DISTILLERS, INC., an Oregon corporation, Defendant. COMPLAINT INTRODUCTION 1. This Lanham Act complaint involves the willful trademark infringement and trade

3-12-cv-79-S CIVIL ACTION NO. ______________

dress infringement by a competitor of Plaintiff using a highly similar trademark and trade dress on and in connection with an identical product, cinnamon whisky, which will imminently be distributed and sold through identical retail outlets to identical purchasers and consumers. PARTIES 2. Sazerac Company, Inc. (Sazerac) is a Louisiana corporation with its principal place

of business in New Orleans, Louisiana. 3. On information and belief, Hood River Distillers, Inc. (HRD) is an Oregon

corporation with its principal place of business in Hood River, Oregon.

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JURISDICTION AND VENUE 4. This is an action for federal trademark and trade dress infringement and unfair

competition arising under the Lanham Act, 15 U.S.C. 1051 et seq., and common law trademark infringement, and unfair and deceptive trade practices in violation of Kentucky state law. 5. This Court has original jurisdiction over the federal trademark and trade dress

infringement and unfair competition claims pursuant to 15 U.S.C. 1121, 1125, and 28 U.S.C. 1331 and 1338. 6. Supplemental jurisdiction is proper for the state law claims under 28 U.S.C.

1367(a) as the claims are so related to the federal claims that they form part of the same case or controversy under Article III of the United States Constitution. 7. Venue is proper in the United States District Court for the Western District of

Kentucky under 28 U.S.C. 1391(b) because it is imminent that Defendants tortious conduct will occur in this district, Defendant conducts regular and systematic business in this district, and a substantial part of the events or omissions giving rise to the claim occurred in this district. FACTS 8. This case involves Defendants willful trademark and trade dress infringement of

Sazeracs FIRE-component marks (FIREBALL; FIREBALL And Design; FIRE WATER; TASTES LIKE HEAVEN. BURNS LIKE HELL., and FIREBALL CINN-SATION) and Sazeracs proprietary trade dress for its FIREBALL and FIRE WATER spirits, by Defendants SINFIRE trademark and related product packaging for its SINFIRE cinnamon whisky product.

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9.

Sazerac is a leading distiller of spirits and the namesake of Americas first

commercially promoted and sold cocktail the Sazerac Cocktail. Sazerac produces a variety of distilled spirits, including vodka, whiskeys, and liqueurs. Sazeracs FIREBALL cinnamon whisky, the top selling cinnamon whisky in North America, and Sazeracs FIRE WATER hot cinnamon liqueur are the subject of this action. 10. Sazerac owns and operates three distilleries within the State of Kentucky: The

Buffalo Trace Distillery and the Barton 1792 Distillery, both located along the bourbon trail in Frankfort and Bardstown, respectively, and The Glenmore Distillery, located in Owensboro. 11. and Kentucky. 12. Since 2007, Sazerac has produced, marketed and distributed a cinnamon whisky Sazeracs FIREBALL cinnamon whisky is bottled and labeled in Montreal, Canada

under the FIREBALL mark. Sazeracs FIREBALL cinnamon whisky is golden brown in color and is marketed in a clear flask-shaped bottle carrying an orange label that bears the image of a red firebreathing devil creature with a serpent-like tongue and flames shooting off the back of its head and a long serpent-like tail. Above the devil creature, FIREBALL is displayed in black and red block font. The edges of the label are designed to appear to have been singed with fire and include burn holes. The neck label is orange with a singed base and displays a red flaming fireball. The dominant color combination for the product package is black, red, and orange. The combination of Sazeracs product packaging for its FIREBALL cinnamon whisky is distinct. The distinctive appearance of the bottle and label used to market FIREBALL is hereinafter referred to as the FIREBALL Trade Dress. An image of the FIREBALL Trade Dress is attached hereto as Exhibit A.

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13.

Sazerac promotes its FIREBALL whisky under the TASTE LIKE HEAVEN.

BURNS LIKE HELL. trademark. 14. The FIREBALL trademarks, bottle label, and marketing indicia create a commercial

impression comprised of flames and burning as well as demon/hell imagery. The FIREBALL product is marketed as a challenge shot or an I dare you to try it category beverage and is accordingly, targeted to the adult demographic who enjoy ordering and drinking these types of beverages. 15. Sazerac uses its FIREBALL CINN-SATION mark in connection with a FIREBALL

whisky drink recipe that is promoted online and at bars. The mark, which is a word-play between Sen[sation], Cinn[amon], and Sin, reiterates the brands sinful, hellish theme. The

FIREBALL CINN-SATION mark is used on recipe sheets distributed to the FIREBALL whisky sales force. Members of Sazeracs sales force frequently pass on the recipe sheets to bartenders and liquor store retailers who sell the FIREBALL product as part of their in-field promotion of the FIREBALL brand. 16. The FIREBALL CINN-SATION mark is also displayed in press packets distributed

to bloggers, newspaper and magazine reporters, and various companies and groups within the spirits industry via Sazeracs public relations agency. 17. The FIREBALL brand sin theme has also been emphasized through live music

concerts and night clubs (where the FIREBALL product is served) and online media promotions. The rock music group Cincinnati Sinners created a music video for their song Fireball dedicated to the FIREBALL Whisky product and originally posted the video on YouTube in November 2010. Portions of the Cincinnati Sinners song and music video, which incorporates the FIREBALL label

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and fire-breathing devil character, have been used by Sazerac on the fireballwhisky.com web site, and its Facebook product site, to promote the FIREBALL brand. 18. Sazerac first used the FIREBALL mark in 1999 in Canada in connection with a spicy

cinnamon flavored whisky and expanded the FIREBALL brand to the United States with the current cinnamon whisky product in 2007. 19. Sazerac produces and markets a cinnamon liqueur under the FIRE WATER brand.

The FIRE WATER product is marketed and sold in a black bottle covered with a shrink-label that bears the image of red and orange flames rising 360 from the bottom of the bottle. Above the flames, the mark FIRE WATER is displayed in silver and red font. Above the mark FIRE WATER, there is a red part dragon, part serpent-like creature breathing fire. The dominant color combination for the product package is black, red, and orange. The distinctive appearance of the bottle and label used to market FIRE WATER is hereinafter referred to as the FIRE WATER Trade Dress. An image of the FIRE WATER Trade Dress is attached as Exhibit B. 20. Sazerac and its predecessor-in-interest have made bona fide and continuous use in

interstate commerce of its FIRE WATER mark since at least 1991. 21. marks: The incontestable registration for FIREBALL (Reg. No. 2,852,432), issued June 15, 2004, for liqueurs; FIREBALL (Reg. No. 3,550,110), issued December 23, 2008, for whisky; Sazerac owns the following federally-registered trademarks for its FIRE-component

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FIREBALL And Design (Reg. No. 3,734,227), issued January 5, 2010, for whiskey;

The incontestable registration for FIRE WATER (Reg. No. 1,819,150), issued February 1, 1994, for liqueur; and

TASTES LIKE HEAVEN. BURNS LIKE HELL. (Reg. No. 3,714,292), issued November 24, 2009, for whiskey;

collectively, and including Sazeracs FIREBALL CINN-SATION common law mark, defined as the FIRE Marks. 22. Over the years, Sazeracs FIREBALL cinnamon whisky has been recognized for its

excellence. Some of these awards include a bronze medal at the International Wine & Spirits 2007 Competition and a gold medal at the San Francisco World Spirits Competition in 2010. 23. Sazeracs FIREBALL and FIRE WATER products are marketed and distributed

throughout the United States, Canada, and Europe. 24. The FIRE Marks and the FIREBALL Trade Dress and FIRE WATER Trade Dress

are strong source identifiers by virtue of their long use, extensive promotion, and acquired distinctiveness. 25. By virtue of its use and registration, Sazerac has the exclusive right to use the FIRE

Marks and FIREBALL Trade Dress and FIRE WATER Trade Dress and any marks or trade dress confusingly similar thereto in commerce in connection with distilled spirits.

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26.

On August 17, 2011, Defendant filed an intent-to-use trademark application with the

U.S. Patent and Trademark Office (Serial No. 85/400,560) for SINFIRE for Distilled Spirits goods identical to those covered by Sazeracs FIRE Marks. 27. Defendant applied for a Certificate/Exemption of Label/Bottle Approval (COLA)

for its SINFIRE cinnamon whisky label with the United States Alcohol and Tobacco Tax and Trade Bureau, which was approved on December 16, 2011. A copy of the COLA is attached hereto as Exhibit C. 28. Defendant advertises its SINFIRE cinnamon whisky on its website, which also

includes a press release dated January 30, 2012 stating that its SINFIRE cinnamon whisky will be [a]vailable for national distribution in February 2012. Print outs of Defendants website are attached hereto as Exhibit D. 29. On information and belief, Defendant currently markets and distributes its

PENDLETON Whisky, PENDLETON 1910 Whisky, BROKERS American Blended Whiskey, and several of its other distilled spirit product lines throughout the United States, and specifically, in Louisville, Kentucky. 30. Defendants COLA and website identify the bottle and label under which it will offer

its SINFIRE cinnamon whisky. The whisky is golden brown in color and is bottled in a clear flasklike bottle with red and orange flames arising from the bottom of a large black stylized S. The S has a curly serpent-like tongue extending from the head of the letter, and a pointed devils tail at the lower end of the letter emerging from the flames. SINFIRE is displayed in block font directly under the flames where the word SIN is in black and the word FIRE in red. The dominant color

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combination for the product package is black, red, and orange. The bottle and label used to market SINFIRE cinnamon whisky is hereinafter referred to as the SINFIRE Trade Dress. 31. Defendant adopted and began use of its SINFIRE mark and SINFIRE Trade Dress for

cinnamon whisky well after Sazeracs rights to the FIRE Marks and FIREBALL Trade Dress and FIRE WATER Trade Dress vested. 32. Defendants SINFIRE cinnamon whisky is in direct competition with the FIREBALL

and FIRE WATER products, and, on information and belief, its nationwide distribution and sale are imminent and impending. 33. On information and belief, Defendant promotes and intends to market the SINFIRE

product as a challenge shot or an I dare you to try it category beverage, to the identical consumer demographic for Sazeracs FIREBALL cinnamon whisky. 34. 35. Defendant is familiar with Sazeracs FIREBALL and FIRE WATER products. The SINFIRE mark and SINFIRE Trade Dress and the FIRE Marks, FIREBALL

Trade Dress and FIRE WATER Trade Dress are used in connection with identical goods, namely, cinnamon flavored liquor, specifically, shot drinks, commonly referred to within the trade as shooters. 36. On information and belief, Sazeracs FIREBALL and FIRE WATER products and

Defendants SINFIRE product will employ identical retail outletsfor example, liquor stores, restaurants, bars, hotels, and online retail sites. On information and belief, Sazeracs products and Defendants SINFIRE product will be purchased by the bottle or by the glass by identical purchasers buyers and consumers of cinnamon flavored shot drinks.

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37.

The SINFIRE mark is likely to be confused with and mistaken for Sazeracs FIRE

Marks because the SINFIRE mark is similar in sight, sound, and meaning to Sazeracs FIRE Marks. 38. The SINFIRE Trade Dress is likely to be confused with and mistaken for Sazeracs

FIREBALL Trade Dress due to the shared depictions of fire, demonic creatures, and other graphics suggestive of hell and sin compounded by the dominant color combination of black, red, and orange for the product packaging. 39. The SINFIRE Trade Dress is likely to be confused with and mistaken for Sazeracs

FIRE WATER Trade Dress due to the shared depictions of fire, serpent-like creatures, and other graphics suggestive of hell and sin compounded by the dominant color combination of black, red, and orange for the product packaging. 40. On information and belief, Defendant adopted and will use the SINFIRE mark and

SINFIRE Trade Dress in commerce with the willful intent to trade off of Sazeracs goodwill and reputation by associating its SINFIRE cinnamon whisky with Sazeracs FIREBALL cinnamon whisky, to create a likelihood of consumer confusion in the marketplace. 41. On information and belief, and as evidenced through online media such as the

Twitter social network, Defendant intentionally adopted a confusingly similar trademark and trade dress for its identical cinnamon whisky product to specifically target Sazeracs FIREBALL whisky and the consumers of Sazeracs FIREBALL whisky. 42. Defendants use of the SINFIRE mark and SINFIRE Trade Dress will likely confuse

or mislead consumers to believe Defendants cinnamon whisky originates from Sazerac or to assume that Defendant is affiliated with, or endorsed by, Sazerac.

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43.

Defendants trademark and trade dress infringement is willful. Defendant had

constructive knowledge of Sazeracs FIREBALL marks and FIRE WATER marks based on Sazeracs federal registrations (see Exhibit E) and, on information and belief, Defendant had actual knowledge of Sazeracs cinnamon shot drinks marketed and sold under the FIRE Marks and FIREBALL and FIRE WATER Trade Dress based on their dominance in the cinnamon flavored shooter market. 44. Defendant had actual knowledge of the FIRE Marks and Trade Dress at least as early

as January 12, 2012, the date they first contacted Sazeracs counsel in response to the trademark cease and desist letter (See Exhibit F, Sazeracs cease and desist letter of December 27, 2011 and counsel for Defendants response of January 12, 2012). Despite its actual knowledge of the FIRE Marks, FIREBALL Trade Dress, and FIRE WATER Trade Dress, Defendant released a press release on January 30, 2012 announcing the launch of its SINFIRE cinnamon whisky in February 2012 (See Exhibit D at 4). FIRST CLAIM FOR RELIEF TRADEMARK INFRINGEMENT 15 U.S.C. 1114 45. 46. Sazerac realleges Paragraphs 1 through 44 of the Complaint. Sazerac is the owner of U.S. trademark Registration Nos. 2,852,432; 3,550,110;

3,734,227; 1,819,150; and 3,714,292. 47. Defendant is not authorized to use Sazeracs registered marks or any mark

confusingly similar or that in any way represents or implies that Defendants goods are in any way associated with Sazerac.

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48.

Defendants contemporaneous use of its SINFIRE mark is likely to confuse

consumers into believing that the goods offered by Defendant originate from, are authorized by, or are somehow affiliated with, Sazerac. 49. 50. Defendant intentionally and knowingly infringes Sazeracs trademark rights. Upon information and belief, Defendants infringing activities are likely to cause

Sazerac to lose control of its hard-earned reputation, to damage Sazeracs reputation and goodwill among consumers, and to divert sales and opportunities away from Sazerac and to Defendant. 51. Defendant is therefore infringing Sazeracs rights in violation of 15 U.S.C. 1114

and will cause irreparable harm to Sazerac by the infringement and Sazerac has no adequate remedy at law. SECOND CLAIM FOR RELIEF FEDERAL UNFAIR COMPETITION 15 U.S.C. 1125(a) 52. 53. Sazerac realleges Paragraphs 1 through 51 of the Complaint. Sazerac has been using its FIREBALL mark on and in connection with cinnamon

whisky in interstate commerce since 2007 and has developed substantial goodwill in this mark in Sazeracs common law territory, the entire United States, prior to Defendants adoption and use of the SINFIRE mark in commerce. 54. Sazerac and its predecessor-in-interest have been using its FIRE WATER mark in

conjunction with cinnamon flavored liqueur in interstate commerce since 1991 and have developed substantial goodwill in this mark in Sazeracs common law territory, the entire United States, prior to Defendants adoption and use of the SINFIRE mark in interstate commerce.

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55.

Defendants use of its SINFIRE mark in interstate commerce in competition against

Sazerac is likely to cause mistake, and/or to deceive as to an affiliation, connection, or association of Defendant with Sazerac, and/or as to the origin, sponsorship, and/or approval by Sazerac of Defendants goods or commercial activities related to Defendants whisky products. 56. Defendant is therefore engaged in unfair competition and false designation of origin

in violation of 15 U.S.C. 1125(a) and has caused Sazerac irreparable harm by the infringement and Sazerac has no adequate remedy at law. THIRD CLAIM FOR RELIEF FEDERAL TRADE DRESS INFRINGEMENT 15 U.S.C. 1125(a) 57. 58. Sazerac realleges Paragraphs 1 through 56 of its Complaint. Sazerac utilizes a distinctive trade dress, the FIREBALL Trade Dress, to market its

FIREBALL cinnamon whisky. 59. Sazerac utilizes a distinctive trade dress, the FIRE WATER Trade Dress, to market its

FIRE WATER cinnamon liqueur. 60. Defendant is not authorized to use Sazeracs FIREBALL Trade Dress or FIRE

WATER Trade Dress or any trade dress confusingly similar or that in any way represents or implies that Defendants goods are in any way associated with Sazerac. 61. Defendants contemporaneous use of the SINFIRE Trade Dress for cinnamon whisky

is likely to confuse consumers into believing that the goods offered by Defendant originate from, are authorized by, or are somehow affiliated with, Sazerac. 62. 63. Defendant intentionally and knowingly infringed Sazeracs trade dress rights. Defendants infringing activities are likely to cause Sazerac to lose control of its hard-

earned reputation, to damage Sazeracs reputation and goodwill among consumers, and to divert

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sales and opportunities away from Sazerac and to Defendant. 64. Defendant is therefore infringing Sazeracs rights in violation of 15 U.S.C. 1125(a)

and has caused irreparable harm to Sazerac by the infringement and Sazerac has no adequate remedy at law.

FOURTH CLAIM FOR RELIEF COMMON LAW TRADEMARK INFRINGEMENT, UNFAIR COMPETITION AND PASSING OFF 65. 66. Sazerac realleges Paragraphs 1 through 64 of the Complaint. Sazerac owns common law trademark rights in its FIRE Marks and FIREBALL

Trade Dress and FIRE WATER Trade Dress and any such rights owned by Sazerac are superior to any rights that the Defendant may claim to have in the SINFIRE mark and SIN FIRE Trade Dress. 67. Defendants unauthorized use of the FIRE Marks and FIREBALL Trade Dress and

FIRE WATER Trade Dress and/or confusingly similar variations thereof, in connection with cinnamon whisky is likely to cause confusion in the trade as to the source or sponsorship of the goods, and likely to lead the public to believe Sazerac is in some way connected to Defendant, and is likely to mislead persons in the ordinary course of purchasing Defendants goods and induce them to believe they are purchasing genuine goods of Sazerac, thereby injuring the reputation and goodwill and unjustly diverting from Sazerac to Defendant the benefits arising therefrom. 68. Defendants unlawful activities constitute trademark infringement, unfair

competition, and passing off as proscribed by the laws of the Commonwealth of Kentucky. 69. Defendants acts of trademark infringement, unfair competition, and passing off were

committed and are continuing to be committed willfully, knowingly, intentionally and in bad faith.

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70.

Defendants acts of trademark infringement, unfair competition, and passing off,

unless enjoined by this Court, will cause Sazerac irreparable damage, loss, and injury for which Sazerac has no adequate remedy at law. PRAYER FOR RELIEF A. Defendant, its employees, representatives, and agents be permanently enjoined from

using the SINFIRE mark and SINFIRE Trade Dress, or any marks, designs or graphics confusingly similar to the FIRE Marks and/or FIREBALL Trade Dress and/or FIRE WATER Trade Dress in conjunction with the marketing, distribution, and sale of distilled spirits and related services; B. Defendant be ordered to publish for a period of not less than twelve months

corrective advertising in all media in which the infringing marks had been published, explaining to customers that Defendant and its SINFIRE mark was not and is not affiliated with or endorsed by Sazerac; C. The Court grant any and all relief to which Sazerac may be entitled pursuant to the

Lanham Act, 15 U.S.C. 1051 et seq., to include treble damages and Sazeracs attorneys fees; D. E. The Court disallow registration of trademark Serial No. 85/400,560; The Court grant any and all relief to which Sazerac may be entitled pursuant to state

law, including state common law, to include enhanced damages and attorneys fees; F. G. proper. The costs of this action be taxed against Defendant; and The Court grant Sazerac such other and further relief as the Court may deem just and

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JURY DEMAND Plaintiff Sazerac Company, Inc. demands trial to a jury on all issues so triable. Dated: February 10, 2012 /s/ Scott P. Zoppoth Scott P. Zoppoth The Zoppoth Law Firm 1600 Kentucky Home Life Building 239 South Fifth Street Louisville, KY 40202 Telephone: (502) 568-8884 Fax: (502) 568-1319 spz@zoplaw.com Peter J. Willsey pwillsey@cooley.com Cooley LLP 777 6th Street, NW, Ste 1100 Washington, D.C. 20001 Telephone: (202) 842-7800 Fax: (202) 842-7899 Todd S. Bontemps tbontemps@cooley.com Lori F. Mayall lmayall@cooley.com Cooley LLP 5 Palo Alto Sq., 3000 El Camino Real Palo Alto, CA 94306-2155 Telephone: (650) 843-5000 Fax: (650) 849-7400 Attorneys for Plaintiff Sazerac Company, Inc.

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